Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 31 August 2007

Anyone reading the news these days might be tempted to believe that journalists are entirely above the law as they race around in search of their latest scoops. What with the usual accusations of invasion of personal privacy, persecution of the Royal Family and harrassment of reality TV disposable stars, it's surprising how infrequently our scions of the press find themselves in court, let alone behind bars. The reason why so many of them are walking free today is not, however, because they are above the law - it's because they're on top of it. And the best way to get on top of the law is to read McNae's Essential Law for Journalists, the nineteenth edition of which has recently been published by Oxford University Press.

Right: Oh, the shame of it. The IPKat was searching for an image that would combine "cat" with the journalistic concept "scoop" - and this is what he ended up with.

Written by Media Lawyer editor Tom Welsh,Press Association Training consultant Walter Greenwood and University of Sunderland Media Law Senior Lecturer David Banks, this edition is packed with valuable advice for the journalist - and not just the reporter desperately seeking his scoop but the cerebral variety too - who needs to know how far he can go, and how cautious he needs to be when executing the broad range of functions of his profession that might attract legal consequences.

What the publisher says:

"The authors' non-technical language, engaging writing style and use of topical examples makes the law clear and brings it to life. The nineteenth edition of this acclaimed book has been made even more user-friendly with a two colour text design and the inclusion of summaries and practical checklists to meet the needs of students and busy journalists who need quick answers to the questions they face in their day-to-day work".

The IPKat likes the two-tone colour scheme of the pages. More importantly, the addition of a new chapter, 'The Online Journalist', gives the book a highly topical dimension and makes it much more relevant to current use. But it would be nice for us bloggers to see terms like (we)blog in the index ...

Bibliographic detail: Paperback, £18.99 (US35). xxiii + 585 pages. ISBN-13 978-0-19-921154-8. No danger of a hernia. Small pages, large print. Written by journalists, for journalists, and actually reads like a dream. If only books written by lawyers for lawyers were so accessible.

Thursday, 30 August 2007

The IPKat has learnt of a Japanese copyright decision from Mainichi Daily News. The Tokyo District Court has ruled that a company which sold cheap copies of certain of Chaplin’s films infringed his copyright, which is still valid until 2015. The decision was taken under the old copyright act, which grants individuals rights until 38 years after their deaths.

The IPKat suspects from the report (but isn’t quite sure) that the novelty comes from a dispute over whether the old copyright law applies (all guidance from readers would be appreciated). He’s also not quite sure what the rationale is behind 38 years post-mortem, rather than any other period.

Via the IPKat's friend Kathrin Vowinckel comes a press note with the news that German company Duales System Deutschland GmbH (DSD) has appealed against the May 2007 decision of the Court of First Instance (CFI) in Case T-151/01Der Grüne Punkt (noted here by the IPKat). The CFI confirmed the European Commission's decision that DSD had abused its dominant position in the market by requiring payment of a fee for the total quantity of packaging bearing its "Der Grüne Punkt" logo (right) and put into circulation in Germany, even though other exemption systems or a self-management solution were used.

In its appeal DSD intends to have the CFI decision set aside, thereby avoiding having to give "isolated trade mark use rights" to third parties. According to the press note, DSD in its submissions to the European Court of Justice argues that the CFI has got it wrong and that its Trade Mark Agreements do not offer "isolated trade mark use rights". The trade mark "Der Grüne Punkt" is not used irrespective of the exemption service relating to the take-back and recovery obligations as set out in the Ordinance on the avoidance of packaging waste (Verordnung über die Vermeidung von Verpackungsabfällen).

DSD complains that the CFI did not deal with the argument that the trade mark "Der Grüne Punkt" was exclusively used in respect of packaging for which manufacturers and distributors were using DSD's exemption services.

Left: how the Commission views Grüne Punkt

In keeping with the transparency rules laid down in the Ordinance, the trade mark is intended to clearly signal to the consumer that the packaging to which the trade mark is applied takes part in the DSD system and that a fee was paid for its waste collection in the immediate vicinity of the actual point of sale.

The IPKat looks forward to seeing how the ECJ will grapple with the various policy issues, as they relate to (i) the environmental imperative of ridding ourselves of packaging waste as efficiently as possible, (ii) the fundamental notion of a competition-driven internal market within the EU and (iii) respect for the integrity of intellectual property even (or particularly?) when its use is licensed to third parties. Yes, says Merpel - but I bet that, when weighed up against cuddly and fashionable environmental issues and the lethal cutting edge of competition, IP will be a distant third.

Wednesday, 29 August 2007

The IPKat congratulates the UK-IPO for finding something constructive to do with its time, while users and stakeholders are busying themselves with their holidays. The office has produced not one but two new online versions of the current version of the UK's Registered Designs Act 1949. The Kats have lost track of the number of occasions this statute has been amended since its passage nearly 60 years ago, but you can now (as of yesterday) download

* a text which has been prepared from what the office calls "the original and authoritative version of the Registered Designs Act1949, as amended by the Copyright, Designs and Patents Act 1988, Registered Designs Regulations 2001 and the Registered Designs Regulations 2003" (available here);

* a consolidated version of the Act that shows the additions and deletions to the previous text as a result of the 2006 Order coming into effect (illustrated, above left, and available here).

Many readers of this weblog are aware that JIPLP, Oxford University Press's monthly Journal of Intellectual Property Law and Practice, is a refereed journal. Over the past year or so, JIPLP's editor and IPKat team blogger Jeremy has enjoyed the benefit of the opinions of numerous expert referees, drawn from all over the world, as to whether articles submitted to JIPLP fit into the categories of being (i) publishable as they stand, (ii) in need of repair or (iii) beyond salvation.

Above, right: how peer reviewers see themselves; below, left: how disgruntled authors see them

After two years' hard and unremunerated work, it's time to revise the list of referees. So now JIPLP is asking afresh for people to come forward and volunteer their services. Current referees are welcome to nominate themselves again.

If you'd like to be considered as a peer reviewer, please email Jeremy here and head your email "JIPLP ref". If you're not one of the journal's current referees, please give a short note of your experiences and/or qualifications in intellectual property and indicate the areas in which you feel competent to review submissions. Don't feel disheartened if you're not selected. JIPLP needs a panel of around 30 referees and it's quite likely that the number of offers will substantially exceed that figure.

IPKat blogger Jeremy was delighted to receive a postal package containing a law book, which he has been perusing with unashamed admiration. It's Die Umstezung des WTO-Basistelekommunikationsübereinkommens im Europäishcen Gemeinschaftsrecht und im Recht der USA. The author is his former student Rico Baumann, upon whose doctoral thesis this book is based. It is published by German academic research publishers Mensch & Buch, Berlin. This book is all about the implementation of the World Trade Organization's Basic Telecommunications Agreement in European and US law: are EU and US laws in line with their international obligations?

The IPKat can't read it because the text is in German but, knowing how clever Rico is and how complex is the subject-matter, he suspects that he wouldn't have had much of a chance of understanding it even in English.

Bibliographic details: xvi + 475 pages, in paperback. ISBNs 3-86664-128-1 and 978-3-86664-128-0. No significant risk of rupture in the book itself, though non-German readers may strain themselves lifting the necessary German-English dictionaries ..

"1. Which side is she on--user or licensor?2. Law and jurisdiction (beware effect on the Unfair Contract Terms Act (UCTA) on use of jurisdiction provisions to sidestep the Act)3. Dispute resolution/binding arbitration/dispute escalation (bewaremuch the same)4. Service levels?5. "There is no such thing as error-free software" - exclusion, limitation (particularly as to which host environments the program might or might not work with), structuring to maximise effect of the schedules in UCTA about the things to which UCTA does NOT apply6. Backups (offer backup media at a reasonable price), the thingsimplied in to software licences and barred from them by the CDPA 1988. Source code escrows?7. The grievous crime of users trying to get round encryption toexercise such rights!8. Ownership of media/loan; if loan, access to retrieve9. Infringment warranties/indemnities (not). If commissioning,ownership of copyright and proof of subsistence and title.10. Costs in litigation if litigation can take place outside UK11. Service (not in litigation)12. Service (in litigation)13. Is it the sort of software users might adapt or package? Or does itpackage with it other licensed in items? Whole slew of issues here - not to mention what happens when the licensed-in bit undergoes a version change ...14. Termination of licence, if applicable. Inspection (including byback-door keys) to check for breach of licence terms.15. If there are periodic licence fees, software clamping (of thatprogram, of other programs, of whole machines, by service engineer, or automatically)16. Wealth creation - some software is used to create other works orsources of revenue. Should the Licensor participate?17. Intra-group use - Contracts (rights of third parties) Act andbarring remedies of non-parties.18. Bespoke items - not posting details and confidentiality.19. Computer games raise other issues too".

Many thanks, Richard! Alice Gould, a partner in London law firm Wedlake Bell, adds that when doing work of this nature you might find the FOLDOC Free Online Computing Dictionary a handy tool. Likewise, Richard Christou's Boilerplate: Practical Issues (4th ed 2005) may be helpful when considering the terms and conditions. The IPKat thinks this may be a Sweet & Maxwell publication, but couldn't find it in Sweet's online catalogue.

Tuesday, 28 August 2007

Today's issue of The Telegraph reports that Arrogant Cat, a boutique that says it is "Arrogant by name, Arrogant by nature", is suing one of its Kensington neighbours, K Fashion (UK), which it alleges to be copying five garments protected by Community design rights. Damages of up to £150,000 are sought, plus injunctive relief and details of K's suppliers.

The IPKat says, this is one to watch - it may just give the courts a chance to consider the IP Enforcement Directive. Merpel says, seeing as Arrogant Cat is a small business with just six shops and no real web presence, this action is about ten times better than an advertising campaign: it lets everyone know of the brand's existence and its celebrity clientele, it sends out the message that it's a classy Kensington joint and it makes it plain that if you buy its fashion products you can expect them to policed against cheap versions and knock-offs that so devalue the fashion shopping experience.

Monday, 27 August 2007

* Société Belvédère v Bat Group Poland Sp. Zo.o (Cour de Cassation, Paris, France) on whether the owner of the SOBIESKI trade mark for alcoholic beverages was entitled to secure the cancellation of the later JAN III SOBIESKI trade mark for tobacco products on the basis that the use of the earlier mark would be limited under tobacco advertising restrictions if it called to mind the products of the junior trade mark owner [Right: Jan III Sobieski - from Polish king and hero to trade mark for popular addictive vices];

* Guccio Gucci SpA v Turkish Patent Institute (Ankara Civil Court of Intellectual and Industrial Property Rights, Turkey) - where the owner of the famous GUCCI trade mark was able to prevent the registration of the GUJI mark;

* Principe SpA v Principles Retail Ltd (Irish Patents Office), in which an application to extend an international registration for the PRINCIPE word and device mark was allowed, following consideration as to likelihood of confusion with the PRINCIPLES national and Community trade marks and applications: here, given the relative sophistication of the consumer seeking the applicant's design service, there was little threat of confusion.

As usual, if you come across any interesting and important European trade mark cases please let the IPKat know here and he'll do his best to get them reported in full, in English.

The September issue of the flagship monthly European Intellectual Property Review is also now out. This issue leads with a critical opinion by the IPKat's friend and fellow scholar Andreas Rahmatian- not only a lawyer but something of a musicologist - on the subject of the recent debate in the UK over the much-lobbied request for copyright term extension for sound recordings and performers' rights.

Right: Since cats by tradition have nine lives, a mere 50 years' protection of rights in their performances may seem a trifle ungenerous

Other features of interest include

* Two pieces on privacy rights in the UK: a full-blown article by Alastair Wilson QC and Victoria Jones (both of Hogarth Chambers) and a case comment by Angus McLean and Claire Mackey (Simmons & Simmons). The Kat wonders whether they're the wrong way round - the case note is a good deal longer than the article and, in his humble opinion, should have been published as one;* A pretty advanced piece (for lawyers, that is) on the methodology for determining IP royalty rates by barrister Tim Sampson (One Essex Court) - tough reading if you aren't great at maths and don't read Greek;

* A thought-provoking piece on the privatisation of culture through the employment of Geographical Indication protection by Rhonda Chesmond (Griffith University), which reminded the IPKat of comments made by Hugh Hansen in an intervention at Fordham University some years ago about GIs marking a return to feudalism.

Issue Three for 2007 of the Intellectual Property Quarterly maintains that title's reputation for publishing somewhat longer, more expansive and analytical pieces than most monthlies can carry. Among the topics in this issue are

* Hazel Carty (Manchester University) on the role of the common law in developing remedies for real or perceived ills, discussing among other things whether the fact that a claimant can prove that he has established an advantage which the defendant's activity erodes is of itself a justification for protecting it;

* Chris Wadlow (University of East Anglia) asks whether TRIPs can be counted as the origin of a GATT Anti-Counterfeiting Code;

* Nigel Gravells (University of Nottingham) revisits a House of Lords decision that is always cited by students in exams, often footnoted by academics and sometimes cited by practitioners - but probably not often critically read: the ruling on originality and authorship of a literary work in Walter v Lane.

In its splendid red and green livery, the bimonthly European Commercial Casescarry quite a few decisions of interest to IP lawyers.

Right: now in the public domain: Claude Monet's famous 'Plant Varieties'

This issue is no exception. In it the reader will find

* Re LUCKY STRIKE trade mark (Supreme Court, Austria) - a battle as to whether the wording in a trade mark prevails over its imagery;

* Société des Auteurs dans les Arts Graphiques et Plastiques v Editions Fernand Hazan (Cour de Cassation, France), in which it was ruled that Monet's works could not be further extended under war extension provisions and were thus definitely in the public domain.

Sunday, 26 August 2007

In "Who are the real vultures?",posted last week, Merpel ventured to raise questions as to the freedom of speech in Hong Kong. She wrote:

"it would be unfair to criticise the Hong Kong court without being in receipt of the full facts, but one gets the uneasy feeling that freedom of communication does not enjoy quite the same level of prestige as a legal right in the Chinese-owned former colony as it does in the European Union".

(c) Article 16 of the Hong Kong Bill of Rights, based on the ICCPR, which appears in s.8 of the Hong Kong Bill of Rights Ordinance, which is specifically preserved by Article 39 of the Basic Law

These issues do not appear in Deputy High Court Judge Carlson's judgment and one must assume they were not raised in argument.

Left: edible cat, Hong Kong-style

Although Burnton J said that an English court would have decided the matter differently, for the reasons he gives in para 52, he does not address how an English court would have dealt with the issue on which the Hong Kong judgment turned, that is breach of the Norwich Pharmacal order. In para 13 of his judgment, Judge Carlson says that the fact that the use of the documents in the hands of the recipient was governed by such an order rather than the implied discovery undertaking was fundamental and the order had been breached".

The IPKat and Merpel are grateful for this information. Merpel's anxiety concerning free speech in Hong Kong remains, though, not least since doubts about the protection of free speech are being expressed by two categories of people who are particularly sensitive to the issue - journalists and academics in Hong Kong itself: see for example here and here.

The IPKat was thrilled to receive a copy of The Law of Patents--With a Special Focus on Pharmaceuticals in India, published by LexisNexis Butterworths and written by the bright and imaginative Feroz Ali Khader. Feroz (whom the Kat is honoured to have among regular readers of this weblog) has not merely a firm grasp of both practical issues and theoretical considerations: he also has a gift for writing English prose which is businesslike, relevant, direct, accessible and supported by authority. Young aspiring legal writers from India who seek publication of their works would do well to emulate his style [parenthetical note: there has been an explosion of interest in writing about intellectual property law in India, the country from which originate the largest number of articles submitted for publication in JIPLP].

While this book is focused on pharmaceutical patent law in India, it integrates Indian statute and case law into the wider context of international and European legal developments, as well as UK case law.

Left: India has become a world leader in the pharma patent game, but many people still prefer the medicinal qualities of a caddyful of Indian tea

This book also has its own weblog, which gives details of its contents and instructions as to how it may be ordered - as well as links to useful sources such as all 163 pages of the Indian Patent Office's Manual of Patent Practice and Procedure. The author hopes that this title will eventually evolve into a wiki - a reflection on our imminent departure from the world of paper.

Merpel says, my favourite bit in this book is the copyright notice. As printed, there is a copyright claim in favour of LexisNexis -- but it has been firmly overstickered with a notice declaring the author to be the copyright owner. It's good to see authors sticking up for their rights. But then, publishers should think twice before tangling with IP lawyers.

"Please tell your friend about these books: Computer Law Drafting and Negotiating Forms, which is available at Westlaw (database: CLDNF) and Computer Software: Protection, Liability, Law, Forms (COMPSOFT). Both include good explanations of "tech-stuff" related to licensing issues".

The Kat has also received an email from a correspondent who wishes to remain anonymous but says:

"I recommend the excellent, but expensive, legal resource, Practical Law for Companies, which we use all the time. It is a drafting note on software licences. I also attach the precedent that is the subject matter of the drafting note. It is drafted from the viewpoint of the supplier.

... obviously each precedent needs to be tailored to its specific requirements...

I think PLC is the best in the field http://www.practicallaw.com/, but as ... it is expensive. If she can put a business case to her employers they may go for it. I am an in-house lawyer, and find that, if I have saved myself the requirement to instruct outside/private practice firms, two or three times in a year by using the service, it has paid for itself.

As regards general tips for software licences, the key issues are of course liability, exclusions and capping liability. Unfortunately for UK lawyers, the combined effect of UCTA and the range of case law associated with it, makes this area a bit of a minefield for IT lawyers, but certain rules can be determined:* Don't exclude death or personal liability for negligence* Don't if possible contract on standard terms* Put a cap on liability, but be realistic* If you want to exclude consequential loss, call it direct loss, andname the types of loss you want to exclude (ie, anticipated savings,loss of data, loss of opportunity)".

"I would recommend both Morgan and Burden on Computer Contracts (7th ed) and (depending on what type of licence it is) any of the PLC Software Licences, because in both cases you benefit from drafting notes and a precedent so you can read the provisions along with the commentary. Hope this helps!"

Stop press: just as he was about to post this item, the Kat received an email from PLC's Roger Wesson who writes:

"The IPKat's friend need look no further than the helpful and practical drafting notes and related precedent published in the PLC IPIT & Communications online service (homepage at http://ipandit.practicallaw.com/main.jsp). She should look at the Software licence agreement (pro-supplier): drafting note http://ipandit.practicallaw.com/5-107-4813 for the supplier perspective (which if she works for an IT company is what I imagine she will be after) or the Software licence agreement (pro-customer): drafting note (http://ipandit.practicallaw.com/5-107-4790) for the customer perspective (always useful to understand the other party's negotiating stance). Each Drafting note contains hyperlinks through to precedents of these agreements and other helpful materials.

We can happily arrange a free trial if the company that IPKat's friend works for isn't already a subscriber so that she can evaluate these materials".

Friday, 24 August 2007

The European Commission has announced that a Statement of Objections has been sent to Rambus regarding an alleged breach of Article 82 EC (also reported here). The Commission allege that Rambus have been claiming unreasonable royalties for the use of certain patents (a list of Rambus patents can be found here) subsequent to a "patent ambush".

Rambus designs, develops and licenses high bandwidth chip connection technologies for computers, consumer electronic and communication products (including systems memory, PC graphics, multimedia, workstations, video game consoles and network switches) but it does not manufacture any of the products itself.

The Commission says:

"The SO concerns “Dynamic Random Access Memory” chips (DRAMS) a type of electronic memory primarily used in computer systems, but also used in a wide range of other products which need to temporarily store data, including servers, workstations, printers, PDAs and cameras.

DRAMs have been standardised by an industry-wide US based standard setting organisation – JEDEC. Rambus owns and is asserting patents which it claims cover the technology included in these JEDEC standards. Therefore, every manufacturer wishing to produce synchronous DRAM chips or chipsets consequently must either acquire a licence from Rambus or litigate its asserted patent rights.

The SO outlines the Commission’s preliminary view that Rambus engaged in intentional deceptive conduct in the context of the standard-setting process, for example by not disclosing the existence of the patents which it later claimed were relevant to the adopted standard. This type of behaviour is known as a "patent ambush".

Against this background, the Commission provisionally considers that Rambusbreached the EC Treaty's rules on abuse of a dominant market position (Article82) by subsequently claiming unreasonable royalties for the use of those relevant patents. The Commission's preliminary view is that without its "patent ambush",Rambus would not have been able to charge the royalty rates it currently does.

This is the first time that the Commission is dealing with a "patent ambush" under EC antitrust law, but the approach reflects well-established general case-law under Article 82 of the Treaty.

In parallel proceedings in the US, the Federal Trade Commission (FTC) issued anorder in August 2006 and in February 2007 whereby it found that Rambus hadengaged in illegal monopolisation and imposed a remedy applicable to US patentsand foreign patents to the extent that they relate to import or export ofrelevant products into or from the US.

As Rambus is active worldwide, has obtained patent protection for the relevant technologies in Europe and it is enforcing its patents against companies applying the relevant standards in Europe, these companies are therefore exposed to litigation over the relevant European patents and may not seek relief on the basis of the US decision. Commission action is therefore appropriate."

The IPKat is not holding his breath to wait for the outcome of this one. He knows that the Commission has the power to impose very heavy fines on undertakings that are guilty of breaches of Articles 81 or 82 EC. However, actually getting to the point of handing the money over can take quite a while, as we know from the (still-ongoing) Microsoft saga. Will Rambus be able to last the full course?

A friend of the IPKat who, for her sins, is now working in-house in the IT industry, has asked for readers' recommendations as to the name of a good book, article, webpage or indeed anything else that gives good guidance to a young, not very techie lawyer, who is about to embark upon her first ever review of a computer software licence. How does one conduct the review? What should she be looking out for? How can she spot the things that aren't there and what might happen if she doesn't ...?

Right: review is not just a matter of keeping things in sight (artwork by creativity expert Bruce van Patter)

Please email your suggestions here. They will be published on this weblog for the benefit of everyone.

Although it was published last year, Innovation Markets And Competition Analysis: EU Competition Law and US Antitrust Law has only recently come to the IPKat's attention. It's written by Swedish lawyer Marcus Glader, an Associate in the Brussels (Belgium) office of internationally-focused law firm Cleary Gottlieb Steen & Hamilton LLP. The publisher is the increasingly active Edward Elgar.

Unsurprisingly, Marcus Glader's practice as well as his academic interests focus on international competition and antitrust law. He has published various works in this area and spoken at several seminars and conferences. His experience also includes other fields of EU law, such as State Aid and other EU regulatory frameworks.

"The pace and scope of technological change is increasing, but some innovative technologies take years before they give rise to saleable products. Before they do, there is competition in ideas and research, but the ideas cannot be market tested, because there are no products or services to offer to consumers. Competition law, in Europe and the USA, cannot be applied to competition in research for innovation as if it was competition between products. Completely different problems arise and a completely different approach is needed. This book, the first on innovation markets, shows how this new approach has been used by competition authorities on both sides of the Atlantic in a wide variety of cases. It analyses in depth and detail the comparative law and economics of the problems arising from the different stages of these markets. It considers how far conclusions can be drawn about the future and comes to interesting, practical and sensible conclusions. And it avoids both unjustified scepticism and exaggerated enthusiasm about the theories of innovation markets".

What the IPKat says:

"This book, which belongs to EE's New Horizons in Competition Law and Economics series - under the auspices of series editor Steve Anderman - examines both the legal standards for the protection of competition in the innovation process and their underlying economic rationale, from the perspective of both European competition law and American antitrust law. At first sight, I thought: aha, this is another "book of the thesis". But it is very more than that, because of the author's own professional experiences have enriched a text that, remarkably, does not even seem to have been threatened by the usual formulaic structure of some comparative law theses ("write all you know about A"; "write all you know about B"; "list the similarities and the differences"). The book is also enhanced by the author's willingness to express his opinions rather that leave it to an exercise in "on the one hand ... on the other hand".

The book is driven more by the author's sensivity to innovation markets and the issues raised by competition than by a love of legal rules, which is what makes it so interesting. This is sensible, since markets - with their real and imagined economic effects - come first and the law, slowly dragging its heels, pursues it at some distance. Dr Glader's is not a convenient reference work for the practitioner who, faced with an issue arising from, say, the Tech Transfer Block Exemption Regulation, wants a quick answer: but it is a work that, certainly from the European perspective, repays thoughtful reading".

Thursday, 23 August 2007

If any of you were wondering why IPKat team member Jeremy has been so quiet today, it's only because he has been struggling to come to terms with a new computer - and with Windows Vista. So far, all attempts to import email addresses and contact lists, not to mention Explorer Favorites, have proved fruitless. If any reader was expecting to hear from Jeremy yesterday, or indeed any time over the next few days, can he please crave their indulgence?

Meanwhile, the IPKat wonders whether any average consumers of computer software and applications were led to assume that there was any connection between Windows Vista and AltaVista.

Wednesday, 22 August 2007

The IPKat wonders whether it could possibly be true that, according to reports, France is just about to ratify the London agreement, perhaps even in the next few days. In an interview with Le Monde, the French prime minister Francois Fillon (right: doing some long-awaited signing) said:

It seems almost like a throwaway line, but perhaps that's just the French way. This Kat looks forward to the long-awaited day when applicants will finally be able to get a European patent with decent coverage without the need to spend huge amounts of money on translations.

The IPKat has not got many cases to report at the moment, so the discovery here on BAILII of last Wednesday's Queen's Bench ruling of Mr Justice Stanley Burnton in Long Beach Ltd and Nguesso v Global Witness Ltd [2007] EWHC 1980 (QB) is a welcome relief.

Nguesso, son of the President of the Congo, was also President and Director General of the marketing arm of Cotrade, the Congolese state-owned oil company. He owned Long Beach, a company registered in Anguilla. This application was brought by Nguesso and Long Beach against Global Witness, a non-profit-making English company which campaigns against corruption and which was nominated for a Nobel Prize for its work back in 2003.

Kensington, a vulture fund that buys debts cheaply in the hope of getting something back, brought proceedings in Hong Kong in order to trace and seize assets belonging to the Congo. That court ordered a company in Hong Kong to disclose information and documents to Kensington. Those documents, which disclosed information about the activities of Nguesso and Long Beach, were referred to at a hearing of the Hong Kong court that was open to the public. Kensington then passed copies of the documents to Global Witness, which posted them on its website.

On the application of Nguesso and Long Beach, the Hong Kong court - sitting in private and without Global Witness being a party to the proceedings - ordered Global Witness not to publish the documents or even to disclose the facts of the making of the application.

Left: this happy young Congolese has a life expectancy of just 52 years.

Nguesso and Long Beach then sued Global Witness in England and Wales, relying on (i) their rights to confidentiality and privacy under English law, (ii) Nguesso's right of privacy under Article 8 of the European Convention on Human Rights, alleging misuse of the documents by both Global Witness and Kensington. According to the applicants (i) an English court was required, as a matter of comity between courts in friendly jurisdictions, not to question the correctness of the judgment of the Hong Kong court; (ii) the documents remained private and confidential, even though they were referred to in court open to the public in Hong Kong; (iii) Nguesso's rights under Article 8 were clearly engaged and the publication of the documents infringed those rights.

Stanley Burnton J refused the applications. In his analysis,

* comity only required the English court to treat the judgments and orders of the Hong Kong court with due respect. However, Global Witness was not a party to the Hong Kong proceedings and was not bound by them;

* in any event, since Global Witness did not carry on business in Hong Kong, it was not subject to that jurisdiction under English rules for the recognition of foreign judgments. The English courts would not therefore regard the company as being bound to comply with the judgments of that jurisdiction.

* the significant public interest in the subject matter of the disclosed documents was such that Global Witness's right of communication under Article 10 of the European Convention on Human Rights would be violated if an English court considered itself bound by the restrictions on reference to the procedures of the Hong Kong court;

* the specified documents were, when disclosed to Kensington, confidential by their very nature and content. That they were referred to in open court was clear, though the extent of that reference was not. This being so, court should proceed on the basis that there was sufficient reference to them as would have removed their confidential status if they had been disclosed on discovery and referred to in open court in England;

* neither Long Beach ot NGuesso had shown that they were likely to establish at trial that the documents were protected by confidentiality;

* While Nguesso's right of privacy under Article 8 was undoubtedly engaged, there was a clear and overwhelming case for refusing relief on the ground that there was an important public interest in the publication of the specified documents and the information derived from them;

* once there was good reason to doubt the propriety of the financial affairs of a public official, there was a public interest in those affairs being open to public scrutiny.

The IPKat wonders how many starving Congolese could have been fed, and how many poverty-stricken people clothed and housed, for the sum spent by the claimants in seeking to conceal from them documentary evidence tending to suggest how Nguesso was funding his luxury lifestyle. Merpel adds, it would be unfair to criticise the Hong Kong court without being in receipt of the full facts, but one gets the uneasy feeling that freedom of communication does not enjoy quite the same level of prestige as a legal right in the Chinese-owned former colony as it does in the European Union.

Tuesday, 21 August 2007

The UK Ministry of Justice (formerly the Department of Constitutional Affairs) asked for comments on its Consultation Paper on Damages, questions 35 and 36:

"Do you agree that in the Copyright, Design and Patents Act 1988 and the Patents Act 1977 the term ‘additional damages’ should be replaced by ‘aggravated and restitutionary damages’?

“What are your views on how the system of damages works in relation to (a) patents;(b) designs(c) trade marks and passing off (d) copyright and related rights?".

In response ACID (Anti Copying In Design) has issued a full submission in which it made the following points:

"... Damages under the existing legal structure are woefully inadequate and serve no purpose in dissuading those who seek criminal gain from what is still considered a “soft crime” by continuing to make vast profits from the immoral, anti-commercial and criminal activities which they continue to pursue. Current estimates about the escalating cost of IP crime and its devastating effects on IP rights holders would be significantly improved if there was a capability within the Court system to use aggravated and restitutionary damages as a compelling deterrent in fighting what has become a serious threat to the UK’s intellectual capital, its intellectual know-how and resultant IP rights. ...Aggravated Damages

The mental distress and moral outrage of IP theft must be seen to be quantified and demonstrated by the award of aggravated damages – often it takes a tremendous amount of conviction, courage and huge financial cost to take action causing ensuing mental distress. An example, out of many (there have been 220 settlements on behalf of ACID members), is an ACID member (SME) who took action against a well-known major high street retailer. After two years battling against powerful legal stonewalling and unnecessary perpetuation of litigation funded by deep legal pockets, he was, at the last moment before Court was the only option, able to settle by mediation. The defendant’s lawyers had used every possible argument to prolong the proceedings. The debilitating effect on his family, his business and himself was enormous, it is doubtful whether he will fully recover from this and now has a very jaundiced view of ever attempting to address IP issues through the legal system. The existence of aggravated damages should most definitely be considered in any reform of the damages system in this country to act as a real and meaningful deterrent against IP theft and used to support designers and creative thinkers to continue and encourage innovation and original thought. Fiscal limitations for many of the UK’s SME’s limits access to the legal system to redress IP infringement but significant aggravated damages would contribute as a real deterrent factor.

Restitutionary damages

Under an assessment of damages, a rights owner can only recover the profit that it would have made on sales of their original articles if they can show that each sale made by the infringer would have been a sale made by the rights owner. Where the selling price of the infringing article is significantly lower than the original, which is almost always the case given that the infringer bears no design, development or promotional costs, it is not possible for the rights owner to recover their lost profit on those sales. Instead, their remedy is limited to a reasonable royalty on each sale made by the infringer based on the unrealistic assumption that the rights owner would have entered into a licence with the infringer had the infringer approached the rights owner for permission to copy in the first place. Accordingly, under an assessment of damages, there is no reason whatsoever for an infringer to approach a rights owner for a licence in advance of its infringing activities when the only sanction which may be made against it should its infringing activities be discovered and pursued by the rights owner would be payment of what they would have to have paid anyway had they approached the rights owner upfront.

It is for this reason that the current system of damages under civil law provides no disincentive whatsoever to copiers and is a significant contributor to the extent of the copying problem currently being experienced.

Exemplary Damages

Punishing the wrong doer in a fair and just society rarely happens in IP infringement. IP crime is still not considered as “theft” nor is it promoted as “theft” clearly because of economic concerns and a lack of education and awareness by the consumer that they are doing anything wrong when they buy counterfeit, pirated or copied goods. In the case of copied goods many are completely unaware that, for example, a supposed reputable brand name has used the designs of an originator without permission, deliberately sent them to China to be produced at a fraction of the original cost and re-introduced them under their own name. The originator (if they are a design right holder) is rarely able to seek legal redress because the law of passing off does not provide an adequate legal remedy as usually they are unknown small brands, the retailer has changed the design sufficiently so that it is difficult to legally challenge, and it is almost impossible to provide evidence of consumer confusion. Risk analysis ensures that this strategy makes economic sense for a retailer or manufacturer but possibly they may review this strategic approach if sufficient exemplary damages were introduced to challenge their financial risk analysis.

Clearly, one of the main disincentives to a copier or dealer in copies of pirated goods is the potential remedies available against them should action be brought. For design right holders, there are currently no criminal sanctions available* see note 1. Furthermore, the current potential civil remedy against an infringer of an intellectual property right is either an assessment of the profit made by the infringer or an award of damages representing the lost profit suffered by the originator.

Under an account of profits, the infringer is only required to account for the profit that they have made in dealing with the infringing articles. The infringer is entitled to deduct all their expenses and overheads involved in those infringing activities. Consequently, there is no loss suffered by the infringer as a result of the infringing activities, and therefore no deterrent whatsoever against future infringing activities. It should also be noted that only a very small percentage of copies are ever pursued through the courts, so on most occasions, the infringer gets away with all their profit.

The European Enforcement Directive dealt with this problem in Article 13. In particular, Article 13.2(b) proposes an award of compensatory damages corresponding to the actual prejudice (including lost profits) suffered by the rights holder as a result of the infringement. This clearly takes into account the possibility of not only damages designed to compensate the loss suffered by the rights owner but includes the element of lost profit often missing under the current UK law and also damages representing other elements including in particular moral prejudice. The design industry is a creative industry and all too often ACID hears of the emotional damage suffered by a designer when their designs are copied. This can have an extremely detrimental effect on their future ability and willingness to create new designs. Implementing the provisions of Article 13 have gone some way but not nearly far enough towards remedying the situation...."

The IPKat considers ACID to be a valuable barometer. measuring the pressures faced by small IP owners and the extent to which the law can assist and protect them. Cases involving ACID members won't generally be the big ones that hit the headlines and get reported in the law reports; nor will its members' disputes usually be the sort of affair in which IP monopoly interests are pitched against economic issues such as the need to ensure the free movement of goods and to preserve a level of competition for the good of consumers - but this is precisely why ACID's perception that existing levels of damages are inadequate is so important for the government to take into account.

Right: Bring a smile to the face of a distressed gentle-cat by lobbying for damages for this creative kitty's injured feelings (illustration by CatWarp)

Merpel says, I'd guess that responses to these questions are likely to be quite one-sided: not many people are likely to take the time and effort to write in and say "we think the present level of damages is fine" - unless a British Association of Infringing Users has recently been formed.

According to reports (mainly here and here), changes to US patent rules that are, after much deliberation, due to take effect as from 1 November are to be officially announced today. The USPTO say in advance of this:

"The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public. Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.

Placing conditional boundaries on a previously unbounded process provides for more certainty and clarity in the patent process. The result is that application quality will be improved and piecemeal or protracted examination will be avoided, enhancing the quality and timeliness of both the examination process and issued patents. "

The IPKat is not going to comment further on this, since so much material is available elsewhere, notably on Patently-O. It appears to his simple feline mind, however, that the changes don't appear to be anywhere near as bad as some people were thinking. So what is all the fuss about?

"There was a news item that I came across now this morning, "Dogs who sniffed out $6 million piracy racket bag medals". The canine campaign in Malaysia involved two labradors, Lucky and Flo, which were trained to detect chemicals used in making DVD. On Monday, 20th, these two canines received outstanding service awards for finding disks in possession of pirates from the Malaysian Government.

These canines were used in these raids that have led to the arrest of 26 persons and seizure worth of over $ 6 million.

Now for the more interesting news. Irked by the canine power, the pirates have put a bounty of around 100,000 ringgit on Lucky and Flo, who have been provided extra security. The Motion PIctures Association, which arranged for the trial of the two crime busters, is planning to taking them to New York and Canada for an official trip and some leisure".

The IPKat is delighted to hear that Lucky and Flo are being so well looked after. Perhaps they caught a whiff of Lassie. Adds Merpel, what a relief it is to know that there are no plans afoot for training sniffer cats.

Monday, 20 August 2007

The August 2007 issue of the Oxford University Press monthly Journal of Intellectual Property Law and Practice actually came out a week or two ago, but IPKat team blogger Jeremy - who incidentally edits JIPLP - has built up a bit of a backlog of publications received ...

The following features may just tickle the fancy of the casual reader:

* A careful analysis by Noam Shemtov (a QMIPRI researcher) of post-Arsenal v Reed perspectives on the real or imaginary doctrine of 'trade mark use' in European trade mark law;

* "To a hammer, everything looks like a nail", a powerful Practice Point on how to play the Japanese trade mark system by John Tessensohn and Shusaku Yamamoto (of the Shusaku Yamamoto law firm, Osaka, Japan);

* A really valuable overview of the main decisions of the European Patent Office Boards of Appeal during 2006 by London barrister Gillian Davies;

* "How to win at Monopoly: applying game theory to the enforcement of IP rights", by Jeremy Phillips- this article having been aired on this weblog in an earlier version in order to benefit from readers' comments;

* By the same author - an Editorial on the recently fashionable topic of intellectual property auctions, which you can read in full here.

Full contents of this issue, and abstracts of all articles, here; for a free sample, click here; if you want to subscribe, click here; details for prospective authors are here; most frequently-read features last month here; for all the editorials of the past year click here.

The July 2007 issue of the LexisNexis Butterworth near-monthly Intellectual Property and Technology Cases contains just three cases - but they give the subscriber 110 pages of detailed legal reading to digest. They are

* Antartica Srl v OHIM, a decision of the Court of First Instance of the European Communities on the opposition brought by NASDAQ to an application to register a Nasdaq word and device mark for various items of sports equipment (noted here by the IPKat);

* the European Court of Justice's second ruling in Boehringer Ingelheim KG v Swingward Ltd, on the labelling and repackaging of imported pharma products (see IPKat weblog here);

* Special Effects Ltd v L'Oréal - the England and Wales litigation over SPECIAL EFFECTS/SPECIAL FX (left), on whether an opponent who fails in trade mark opposition proceedings is barred from seeking to have the mark cancelled on the same grounds (this INTA-amicus-backed decision is noted by the IPKat here).

Sunday, 19 August 2007

The IPKat's friend Martin Cohen has written in with the following comment:

"I have just read a fascinating article from Popsci.com regarding the current state of counterfeiting industry in China. The article centres on the release of the "MiniOne" phone, which is a clone of the Apple iPhone, but in fact dares to include a fuller (and arguably more useful) features list than the original it imitates. The article discusses how extensive the issue in China is, with factories working 'ghost shifts' (outside offical hours) to produce similar or identical versions of western products. In some cases whole factories for the production of fakes have been built - using the same blueprints as the factories creating the official versions. Product patent filings are often used as manufacturing guides. The market for these products is an extremely healthy one, with cases of counterfeit products proving more popular than the originals among Chinese consumers.

The article notes that China's development is emulating that of Japan and Korea before it, and that counterfeiters are now at a stage where they are looking to produce products superior to the Western models. The question is whether, while the actions of these counterfeiters are undoubtedly illegal, they represent merely a stage in the economic cycle which the Chinese manufacturing industry will use as a springboard to producing products that compete in their own right on a global stage with their western counterparts.

Much has been said already about China's IP policy and how many are pressuring the Chinese to bring stricter enforcement to this area (a message which may, in part, already have been headed). What I think is interesting is that an industry that can produce superior consumer goods, often bringing them to the market at lighting speeds (frequently undercutting releases of official manufacturers when bringing their products to China), clearly displays the talent and drive to make its own products and reap genuine legitimate commercial rewards. If these companies put the same level of industriousness into their own designs, they may be able to attain perhaps the highest level - to have western consumers, in western countries choosing their products over those of local competitors. Can a culture of systematic IP abuse stimulate a country's own design and manufacturing sectors to higher levels of excellence? If so, is this abuse in any way legitimated? This is (perhaps) a challenging question to answer.

Today the IPKat is pleased to offer his readers a guest blog by barrister Daniel Byrne (Clarke Willmott), who writes:

"It is sometimes instructive to investigate which marks have been recently refused registration by the UK Trade Marks Registry under Article 3 of Directive 89/104 (absolute) grounds. This can be done using the refused mark search facility on the UK-IPO website. Sadly, as the reasons for the refusal are not shown, some educated guesswork is required. For example, an international application was made by Rolex for this picture (right) of a watch, designating the UK under the Madrid Protocol and specifying Class 14 (timepieces etc). Insofar as this application was for the shape of an object it was likely to have been refused under Article 3(1)(e) as it seems to be (at least partly) a shape which results from the nature of the goods themselves. In any event, it would probably have been refused on the basis of being non-distinctive under Article 3(1)(b), although it has been successfully registered at Rolex's 'home' registry, the Swiss Trade Mark Office.

A sneak preview of the National Lottery’s Christmas scratch-card can be seen in their refused application here.

The University of Wales, Bangor was refused its application for the phrase CYMRAEG CLIR, which this blogger understands means “CLEAR WELSH”, and is being used in a way akin to the Plain English guidelines for writing clear and accessible public documents. In contrast, the mark PLAIN ENGLISH CAMPAIGN was successfully registered in 1996.

Because no reasons for the Trade Marks Registry’s refusals are provided in the database, it is entirely unclear whether FLYING FISH FEASTS was refused for being descriptive of feasts for flying fish or of feasts made from flying fish (or both). Flying Fish Feasts Ltd was incorporated in 2002 and seems to have been using the mark since at least early 2004 (for fishcakes!); this blogger wonders whether evidence of distinctiveness acquired through use would have assisted in the registration of this mark.

The Department of Health application for HEALTHY SCHOOLS (device-word) was refused. This application appears to be linked to the National Healthy Schools, as the specification covers "certificates to schools awarding achievement of Healthy Schools status" and can be seen being used in this publication. Perhaps if Jamie Oliver had been one of the children depicted jumping for joy at their healthiness, this mark would have had more success!

Beechams' were clearly not envisaging eating (pre-Jamie Oliver) school dinners in their application for DON'T FORGET YOUR TONGUE. In reality, this application was intended to be registered for dental and oral care products and was probably refused for serving in trade to indicate the intended purpose of the goods (Article 3(1)(c)). Likewise for Unilever's refused application for the word mark HOW DIRTY BOYS GET CLEAN. Look out for use of this unregistered mark on aftershave, hair colourants and beauty masks (for which, inter alia, Unilever sought its registration). Unilever has however been successful with its (backup?) application for LYNX HOW DIRTY BOYS GET CLEAN, which has proceeded to advertisement.

S & M Hosiery (who do not appear to have a website - a search for the company returns the top sponsored link as Marks and Spencer) applied for a device mark of a masked man throwing a bottle (molotov cocktail?) Did the Registry consider this mark unable to distinguish between the goods (it was for clothes) of one undertaking and those of another, or was there an issue of morality? Answers on a studded postcard please".

Update (20 August): Thanks to the first commenter Tom Cowling for pointing out the obvious similarity between the 'S&M Hosiery' application and the graphic work (right) by artist Banksy, as seen in the book 'Wall and Piece' (p42). The IPKat wonders whether the work by Banksy is original or if, like many of his other works, is at least partly copied from elsewhere.

Friday, 17 August 2007

The IPKat in indebted to his learned colleague Margaret Marks (Transblawg) for drawing his attention to the two accompanying pieces of iconography. Apparently the Spanish government paid 12,000 euros for two versions of a new logo (left), of which the lower one looks strikingly like the German one (right). The IPKat thinks it's to make the German tourists in Spain feel more at home. Merpel suspects that, what with stealing the Germans' mattresses and now nicking their logo, the Spanish are engaging in a campaign of plundering German culture.

The IPKat is lifting his glass to toast the health of the late, lamented British Protected Geographical Indication Newcastle Brown Ale. Commission Regulation 952/2007 of 9 August 2007 cancelling a registration of a name in the Register of protected designations of origin and protected geographical indications (Newcastle Brown Ale (PGI)) is now a reality. The classic Northern brew - much beloved by generations of undergraduates and others too weak to withstand its potent charms - is no longer a PGI since its owners shifted its seat of production from Newcastle to neighbouring Gateshead.

The IPKat's curiosity was prodded by a recent visit to the website of an outfit calling itself Stream IP Barristers. The website declares:

We will represent you when you need to put your case effectively. We will advise you when you need guidance. We will draft any documents you need.

We are commercially-minded, approachable barristers who make your business our priority.

You want to know the bottom lineAt the outset, your STREAM IP barrister will talk through your needs and give you an idea of the likely work involved and how much it might cost

You want a safe pair of handsSTREAM IP barristers are used to the commercial, and personal, sensitivities of business

You want things done your wayMembers of STREAM will work as part of your team, fitting in with your systems and objectives

You want to save timeMembers will conduct as much of your business as you like by phone and email, keeping time-consuming meetings to a minimum".

This all looks hugely impressive, but there are a couple of things that are puzzling the IPKat. First, he's been around a long time but he's never seen or heard anything of Stream before. Since the IP fraternity in London is very sociable, he's sure he'd have encountered them by now. Secondly, there doesn't seem to be any indication as to the identity of anyone at Stream. Can anyone enlighten him? Please let him know by email here.

Finally, the IPKat's friend and arch Scorecard fiend Duncan Bucknell is running a new Scorecard, this time on Pharma & Biotech Compulsory Licences under Article 31 of TRIPs.

Left: compulsory pharma licensing under TRIPs has not yet been extended to Damien Hirst's Pharmacy

So far he has recorded data on 19 countries. Check it out here. Explains Duncan,

"There's been a lot of buzz lately about various developing countries ordering Compulsory Licences. This scorecard tracks the countries, the products, timing of the ordered Licences and provides updates as they arise.

Compulsory Licences (under Article 31 of TRIPs) have traditionally been ordered to enable access to medicines to people in developing countries who would otherwise not be able to afford them. The Licences have typically been granted in respect of medicines to treat diseases such HIV/AIDS and other infectious diseases.

Part of the buzz which has recently arisen surrounds allegations that some countries have used the mechanism to drive down drug prices.

Other similar mechanisms, such as those under the 'Paragraph 6' system are also be tracked in this Scorecard. The Paragraph 6 system was implemented in the 30 August 2003 Decision of the WTO. Paragraph 6 refers to Paragraph 6 of the DOHA Declaration on TRIPs. The mechanism basically enables importation of cheaper medicines for countries which are too poor to manufacture the medicines themselves. Paragraph 6 states:

"6. We recognize that WTO Members with insufficient or no manufacturing capacities in the pharmaceutical sector could face difficulties in making effective use of compulsory licensing under the TRIPs Agreement. We instruct the Council for TRIPS to find an expeditious solution to this problem and to report to the General Council before the end of 2002."

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